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Amendments of Rules of the European Patent Convention (EPC) relating to the unity of invention on entry of the PCT regional phase (Rule 164 EPC)

Under the present regulations, when an international patent application (PCT-application) enters the European phase, only the invention or group of inventions first mentioned in the claims is searched in case the patent application does not meet the requirements for unity of invention. Non-searched subject-matter must then be excised from the application unless the lack of unity objection can be overcome.

Also in case the applicant amends the application on entry of the European phase to subject-matter which was not searched by the EPO acting as International Search Authority (ISA) or Supplementary International Search Authority (SISA), the applicant is forced to limit the application to one invention covered by the search.

In both cases, the applicant must file a divisional application to cover the remaining subject-matter he would like to protect.

To provide more flexibility for applicants, the EPO has decided to amend the relevant Rule 164 EPC effective November 1, 2014 as follows:

1. Patent applications for which the EPO draws up a supplementary European Search Report (Rule 164(1) EPC)

In case the EPO considers that the application documents which serve as the basis for the Supplementary European Search Report do not comply with the requirement of unity of invention, the EPO will then draw up a partial supplementary search report on those parts, which relate to the invention or the group of inventions first mentioned in the claims. Furthermore, the EPO will inform the applicant that he may pay a further search fee within two months in respect of each additional invention he would like to have searched.

In case the applicant pays the respective additional search fees, the EPO will draw up the supplementary European search report also for the parts of the application relating to inventions in respect of which search fees have been paid.

Thus, the applicant may decide at a later stage, for example in response to the communication according to Rule 70(2) EPC, which of the searched inventions should be covered by the European patent application. In case the Applicant is interested to cover additional inventions contained in the application by filing a divisional application the applicant will already have a corresponding patentability opinion of the EPO.

2. Patent applications for which the EPO does not draw up a supplementary search report (Rule 164(2) EPC)

This concerns applications for which the EPO was acting as ISA or as SISA. In this case, if the Examining Division considers that the claims have been amended on entry of the European phase such that an invention or a group of inventions within the meaning of Article 82 (Unity of invention) is claimed which was not searched by the EPO acting as ISA or SISA, the Examining Division will inform the applicant that, if an additional search should be performed in respect of any such invention, a search fee has to be paid within a period of two months.

Thus, the applicant has the possibility to either pay the search fee or to amend the application such that it covers solely the invention or group of inventions for which the EPO acting as ISA or SISA has drawn up the international search report.

Also this amendment gives more flexibility to the applicant at a later stage of the prosecution of patent applications, for example in case the applicant desires to cover aspects which were not claimed on filing of the international patent application.

The amendments will enter into force on November 1, 2014. Amended Rule 164(1) EPC will apply to applications for which the European search report has not been drawn up. Amended Rule 164(2) EPC will apply to applications for which the first communication under Article 94(3) EPC and Rule 71(1) and (2) EPC or, as the case may be, Rule 71(3) EPC has not been drawn up has not yet been issued.